Mattel claimed that the “barbi” portion of “barbitwins.com” was confusingly similar to their registered BARBIE trademark. In their complaint, Mattel said that Mr. Zournas made no legitimate use of the domain name, and that it was merely a Pay-Per-Click page directing traffic to porn sites.
Mattel also claimed that Mr. Zournas registered and used barbitwins.com “with the intent to trade on the goodwill Complainant has earned in its BARBIE products, and to enhance the commercial value of his own services. Respondent has damaged the reputation, business and goodwill of Complainant.“
Unfortunately for Mattel, Mr. Zournas was not trying to capitalize on the BARBIE trademark — but the personal fame of a pair of actress/models known as The Barbi Twins. As Mr. Zournas correctly alleged in his response to the UDRP complaint:
The Barbi Twins are real people. Shane Barbi and Sia Barbi, also known as The Barbi Twins (born April 2, 1963 in San Diego, California), are identical twins and adult pin-up models. After their parents’ divorce, Shane and Sia legally took on their mother’s maiden name of Barbi. (source)
Accordingly, Mattel had no legitimate complaint against Mr. Zournas, and he got to keep the barbitwins.com domain name — for the time being.
Two things are striking about this case. First, did Mattel actually let Barbie, herself, make the decision to file this action? Had they never heard of The Barbi Twins? Someone on Mattel’s intellectual property management team must know how to use Google, no?
The second thing that strikes me about this case is that the arguments that Mr. Zournas used in his own defense in this case will prove fatal to his case if the real Barbi Twins bring an action against him. His site is not a “fan site,” (which might be fair use) but rather is a Pay-Per-Click site with ads keyed to adult entertainment links. That is not a legitimate use.
If the real Barbi Twins file a UDRP action against Mr. Zournas, the statements he offered in his defense in this action will be their best evidence of his bad faith registration. Perhaps Mr. Zournas won’t mind. I know that I would like to have the Barbi Twins beat me — in a UDRP action.